Casalonga UPC rules of procedure
Powered by Casalonga

 Case Law
Rule 8: Party and party’s representative

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 31/10/2024, Magna PT s.r.o., Magna PT B.V. & Co. KG, Magna International France, SARL v. Valeo Electrification (Case/ Registry number: ACT_39183/2024, ORD_56534/2024)
Example of decision on rebuttable presumption on the patent proprietor: "1. In case of European Patents, the material proprietor is deemed to be the patent proprietor for the purposes of proceedings before the UPC. However, if the patent proprietor is registered in the European Patent Register or in the national register(s), it may initially rely on a rebuttable presumption (R. 8.5 (c) RoP). This rebuttable presumption attached to the registered patent is a strong presumption which can only be rebutted in PI proceedings if the title is manifestly erroneous.
2. If the defendant claims that the applicant is not acting in good faith because the applicant has unlawfully appropriated the patent in suit to its detriment, this cannot be taken into account in favour of the defendant in the weighing of interests if the defendant has failed to bring a vindication action in due time before the national courts.
3. In answering the question of whether the patent in suit is more likely to be invalid than not, no conclusions can be drawn from the general revocation rates of patents. Only relevant is the patent in suit. "

Court of First Instance - Munich (DE) Local Division, Order dated 25/09/2024, Heraeus Precious Metals GmbH & Co. KG v. Vibrantz GmbH (Case/ Registry number: App_48805/2024, ORD_53396/2024)
Example of decision on the counterclaim for revocation: "According to Rule 42 RoP, an action for a declaration of invalidity of a patent shall be directed against the proprietor of the patent. If the invalidity action is directed against the proprietor under Rule 8.6 (‘the registered proprietor’), but the registered proprietor is not the proprietor within the meaning of Rule 8.5(a) or (b) (‘Rule 8.5 proprietor’), , either of those proprietors shall, as soon as possible after the notice of the invalidity action has been served on the court, file an application for substitution of the Rule 8.5 proprietor for the registered proprietor in accordance with Rule 305.1(c). Thus, the invalidity counterclaim can be directed against both the Rule 8.6 holder, i.e. the registered proprietor, and the Rule 8.5(a) or (b) holder, the substantive proprietor. In the event of a split, the registered proprietor who is not also the substantive proprietor must file an application under Rule 305.1(c) RP as soon as possible. According to this provision, the court may, at the request of a party, order that one person replace another."

Court of Appeal – Luxembourg (LU), Order dated 08/02/2024, Ocado Innovation Limited v. Respondent (Case number UPC_CoA_404/2023 ORD /)
Example of decision on the representation of a member of the public requesting access to the register:“From this follows that ‘A party‘ in R.8.1 RoP is a wider concept than ‘Parties‘ in the heading of Article 47 UPCA and covers all applicants of any application or action under the UPCA and RoP. The Court of Appeal notes that ‘a party‘ in R.220.1 has a similar wider meaning; it also applies to a third party affected by an order or decision such as a third party under R.190 and a member of the public under R.262.1(b). Consequently, all applicants of any application or action under the UPCA and RoP are required to be represented, except if the rules of procedure waive the requirement of representation. An applicant under Rule 262.1(b) is not exempted from the requirement of R.8.1 RoP and is therefore required to be represented.”
“8. Members of the public requesting access to the register pursuant to R.262 RoP are consequently in an adversarial situation where representation is called for.
9. It follows from the above that the Respondent should have been represented before the Court of First Instance and must also be represented before the Court of Appeal. The Statement of response that was lodged by the Respondent shall be disregarded, as it was not lodged by an authorised representative pursuant to Article 48 UPCA.”